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Monday, 19 June 2017

Can signs which are offensive and disparaging be
registered as trade marks?

Similarly
to EU trade mark law, which prohibits registration of signs "which are
contrary to public policy or to accepted principles of morality"[Article 4(1)(f)Trade
Mark Directive; Article 7(1)(f)Trade
Mark Regulation], the US Lanham Act contains a provision that prevents
registration of certain signs on similar grounds.

More
specifically, among other things §1052(a)provides that "No trademark by which the goods of the applicant may be distinguished
from the goods of others shall be refused registration on the principal
register on account of its nature unless it—(a) Consists of or comprises ... matter
which may disparage".

Readers
will remember that the issue of disparaging trade marks has been at the centre
of attention in the US for a while, also following the refusal, by the US
Patent and Trademark Office (PTO), to register "THE SLANTS" as a
federal trade mark. Readers will also recall that the issues facing disparaging trade marks
are not limited to this case: back in 2014, for instance, the PTO cancelled the
Redskins' trade mark registrations on the same grounds.

The
application to register "THE SLANTS" as a trade mark was made
by Simon Tam, lead singer of rock group “The Slants”.
The band chose this name[a slang,derogatory term used
for persons of Asian descent] to “reclaim” the term and drain its
denigrating force as a derogatory term for Asian persons.

Justice Samuel Alito

Further
to the PTO's refusal to register the sign as a trade mark, Tam took the case to
federal court, where the en banc Federal Circuit ultimatelyfoundthe disparagement clause in the Lanham
Act facially unconstitutional under theFirst
Amendment’s Free Speech Clause.

The
US Supreme Court accepted to consider the issue of disparaging trade marks, and
earlier today it issued itsjudgment.
Delivering part of the Court's opinion, Justice Alito announced the judgment,
which affirms the Federal Circuit's judgment.

Among
other things, Justice Alito held that:

"The disparagement clause violates
the First Amendment’s Free Speech Clause. Contrary to the Government’s
contention, trademarks are private, not government speech. Because the “Free
Speech Clause . . . does not regulate government speech,”Pleasant Grove City v. Summum,
555 U. S. 460, 467, the government is not required to maintain viewpoint
neutrality on its own speech. This Court exercises great caution in extending
its government-speech precedents, for if private speech could be passed off as
government speech by simply affixing a government seal of approval, government
could silence or muffle the expression of disfavored viewpoints."

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